`571-272-7822
`
` Paper 79
`Entered: August 29, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WOCKHARDT BIO AG,
`Petitioner,
`
`v.
`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01582
`Patent 8,822,438 B2
`____________
`
`
`Before JEFFREY N. FREDMAN, KRISTINA M. KALAN and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`DECISION
`Granting-In-Part Patent Owner’s Motion to Expunge
`37 C.F.R. §§ 42.14, 42.56
`
`
`
`
`
`
`
`IPR2016-01582
`Patent 8,822,438 B2
`
`
`Pursuant to 37 C.F.R. § 42.56, Janssen Oncology, Inc. (“Patent
`Owner”) moves to expunge Papers 12, 26, and 28, as well as Exhibits 1089,
`1103, 2002, 2003, 2044, 2092, 2093, 2118 and 2161. Paper 78, 1
`(“Motion”). Patent Owner attests Petitioner does not oppose the Motion. Id.
`For the reasons set forth below, we grant-in-part Patent Owner’s Motion.
`A strong public policy exists for making information filed in an inter
`partes review publicly available. 37 C.F.R. § 42.14; see also Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48756, 48760–61 (Aug. 14, 2012). The
`public’s interest in maintaining a complete and understandable file history is
`balanced with the party’s interest in protecting its truly sensitive,
`confidential information. 77 Fed. Reg. at 48760–61. Because sealed
`information ordinarily becomes publicly available after final judgment, a
`party wishing to preserve its confidentiality may file a motion to expunge
`the information from the record. Id.; 37 C.F.R. § 42.56.
`Patent Owner’s Preliminary Response (Paper 12) was filed under seal,
`along with a corresponding public version (Paper 13). Patent Owner’s
`Surreply (Paper 26) was also filed under seal, along with a corresponding
`public version (Paper 27). On January 19, 2017, the Board issued the
`Institution Decision under seal (Paper 28) along with a corresponding public
`version (Paper 29). We previously determined, in our Final Written
`Decision, that good cause existed to seal Papers 12, 26, and 28, and Exhibits
`1089, 1103, 2002, 2003, 2044, 2092, 2093, 2118 and 2161, because they
`contain confidential information. Paper 72, 47–48. We stated, “[i]n
`rendering this Final Written Decision, it was not necessary to identify, nor
`discuss in detail, any confidential information.” Id. at 48. At this stage in
`the proceeding, we determine that expunging these exhibits, namely,
`
`
`
`2
`
`
`
`IPR2016-01582
`Patent 8,822,438 B2
`
`Exhibits 1089, 1103, 2002, 2003, 2044, 2092, 2093, 2118 and 2161, would
`not hinder the public’s ability to understand the Final Written Decision or
`the trial at large. We therefore agree with Patent Owner that the public’s
`interest in being able to access this information does not outweigh Patent
`Owner’s need to protect its confidential information. We are, however,
`concerned that expunging Papers 12, 26, and 28 would deprive the record of
`the analysis and reasoning provided by Patent Owner in support of its
`Preliminary Response and Surreply arguments, and the analysis and
`reasoning provided by the Board in rendering the Institution Decision.
`Accordingly, notwithstanding the provisions of our Trial Practice Guide,
`Papers 12, 26, and 28 shall remain under seal, but they shall not be expunged
`from the record.
`Accordingly, we grant Patent Owner’s request to expunge
`Exhibits 1089, 1103, 2002, 2003, 2044, 2092, 2093, 2118 and 2161.
`Papers 12, 26, and 28 shall remain under seal.
`
`It is:
`ORDERED that Patent Owner’s Motion to Expunge is granted-in-
`part, and Exhibits 1089, 1103, 2002, 2003, 2044, 2092, 2093, 2118
`and 2161 are expunged; and
`FURTHER ORDERED that Papers 12, 26, and 28 shall remain under
`
`seal.
`
`
`
`
`
`
`3
`
`
`
`IPR2016-01582
`Patent 8,822,438 B2
`
`
`
`FOR PETITIONER:
`
`Dennies Varughese
`Deborah Sterling
`Lestin L. Kenton Jr.
`Ralph W. Powers III
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`dvarughe-ptab@sternekessler.com
`dsterlin-ptab@sternekessler.com
`lkenton-ptab@sternekessler.com
`tpowers-ptab@sternekessler.com
`
`FOR PATENT OWNER:
`
`Dianne B. Elderkin
`Barbara L. Mullin
`Ruben H. Munoz
`AKIN GUMP STRAUSS HAUER & FELD LLP
`delderkin@akingump.com
`bmullin@akingump.com
`rmunoz@akingump.com
`
`Anthony C. Tridico
`Jennifer H. Roscetti
`FINNEGAN HENDERSON FARABOW GARRETT & DUNNER
`anthony.tridico@finnegan.com
`jennifer.roscetti@finnegan.com
`
`
`
`
`4
`
`
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